OPPOSITION No B 2 694 191

Delta Enterprise Corp., 114 West 26th Street, New York, New York 10001, United States of America (opponent), represented by Durán Cuevas, S.L.P., P° de Gracia,110, 1°, 1ª, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Delta-Sport Handelskontor GmbH, Wragekamp 6, 22397 Hamburg, Germany (applicant), represented by Blaum Dettmers Rabstein Rechtsanwaltspartnerschaft mbB, Am Wall 153-156, 28195 Bremen, Germany (professional representative).

On 06/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 694 191 is partially upheld, namely for the following contested goods:

Class 20:        Furniture, mirrors, picture frames; Goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely flower stands, cases, boxes, bins, medicine cabinets, coat racks, stools, cushions, neck cushions, neck roll cushions, baskets, tables, camping tables, camping chairs, camping stools, easy chairs, sleeping bags for camping.

Class 28:        Games and playthings.

2.        European Union trade mark application No 14 327 911 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 327 911, namely against all the goods in Classes 9, 18, 20, 25 and 28. The opposition is based on Spanish trade mark registration No 1 523 644 and European Union trade mark registration No 10 303 881. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Spanish trade mark registration No 1 523 644

Class 20:         Mattresses and pillows.

European Union trade mark registration No 10 303 881

Class 12:        Baby Strollers and baby carriages, children’s car seats.

Class 16:        Paper height charts, Children’s Bookends, Children’s Easels.

Class 20:        High Chairs, Playpens, Play yards, Bassinets, Baby Walkers, Toddler Beds, Cribs, Dressers, Armoires, Chest of Drawers, Changing Tables for Babies, Combination Changing Tables and Dressers, Tables, Chairs, Director’s Chairs, Rocking Chairs, Desks, Furniture Toy Boxes, Toy Chests, Benches, Non-metal Bins, Step Stools, Coat Racks, Shelves, Clothes Hangers, Mirrors, Infant Bouncers, Bed Headboards, Vanities, Stools, Mattresses for cribs and cradles, crib bumpers and bumper pads for cradles.

Class 24:        Vinyl place mats and cloth wash cloths, bed blankets and children’s blankets, and sheets for beds, cribs and cradles, comforters, pillow cases, dust ruffles, bed canopies, play blankets and textile wall hangings; all the aforesaid goods being for children under the age of eighteen.

The contested goods are the following:

Class 9:        Helmets for bicycles, Ski helmets, Skateboard helmets.

Class 18:        Casual bags; Sport bags; Shopping bags; Luggage boxes; Travelling requisites, not included in other classes, namely chest pouches, money belts, belt bags, bum bags, spectacle cases, luggage straps, protective covers for suitcases, suitcase covers, travelling sets, toiletry bags, travel pouches.

Class 20:        Furniture, mirrors, picture frames; Goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely flower stands, cases, boxes, bins, medicine cabinets, flagpoles, coat racks, stools, cushions, neck cushions, neck roll cushions, baskets, tables, camping tables, camping chairs, camping stools, easy chairs, sleeping bags for camping, wind chimes.

Class 25:        Clothing; Footwear; Headgear.

Class 28:        Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested helmets for bicycles, ski helmets, skateboard helmets are dissimilar to all the opponent’s goods in Classes 12, 16, 20 and 24. The goods belong to different areas of activity, are of different natures and have different initial purposes, producers, distribution channels and end users. They are not complementary or in competition.

Contested goods in Class 18

The contested casual bags; sport bags; shopping bags; luggage boxes; travelling requisites, not included in other classes, namely chest pouches, money belts, belt bags, bum bags, spectacle cases, luggage straps, protective covers for suitcases, suitcase covers, travelling sets, toiletry bags, travel pouches are also dissimilar to all the opponent’s goods. The goods belong to different areas of activity, are of different natures, have different purposes, methods of use and distribution channels and are neither complementary nor in competition. Although they may have the same end users, this is not enough for a finding of similarity.

Contested goods in Class 20

The contested mirrors are identically contained in both lists of goods.

The contested furniture includes, as a broader category, inter alia, the opponent’s high chairs, dressers, armoires. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely stools, camping stools are included in the broad category of the opponent’s stools. Therefore, they are identical.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic, namely, tables, camping tables are included in the broad category of the opponent’s tables. Therefore, they are identical.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely camping chairs, easy chairs are included in the broad category of the opponent’s chairs. Therefore, they are identical.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely coat racks are included in the broad category of the opponent’s coat racks. Therefore, they are identical.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely cushions, neck cushions, neck roll cushions are included in the broad category of, or overlap with, the opponent’s pillows. Therefore, they are identical.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely bins include, as a broader category, or overlap with the opponent’s non-metal bins. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely cases, boxes include, as a broader category, or overlap with the opponent’s furniture toy boxes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely flower stands are a kind of furniture, and therefore similar to other items of furniture such as the opponent’s shelves. They may have the same purpose, method of use, distribution channels, producers and relevant public.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely medicine cabinets are furniture made to store medications or other items. As such, they are similar to the opponent’s furniture that is also intended for storing things, such as dressers and shelves. These goods have the same purpose, method of use, producers and distribution channels. They may also have the same relevant public.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely baskets are similar to the opponent’s furniture toy boxes, toy chests, non-metal bins, since they are all intended for storing things. Therefore, they have the same purpose, distribution channels and relevant public. Furthermore, they may be in competition.

The contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely sleeping bags for camping are similar to the opponent’s mattresses. Even though sleeping bags for camping are products that are purely functional, consisting of a protective, warm ‘bag’ for a person to sleep in while camping, there are mattresses that serve the same purpose, to use when sleeping in nature, and are for putting underneath a sleeping bag. Therefore, they may have the same purpose, to make the user more comfortable when camping, and are complementary. They may have the same producers, distribution channels and relevant public.

The contested picture frames are similar to a low degree to the opponent’s tables. They have the same purpose (decorative, e.g. in the case of small decorative tables), distribution channels and relevant public.

However, the contested goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely flagpoles; wind chimes are not related to any of the opponent’s goods. The goods belong to different areas of activity, are of different natures and have different purposes. These contested goods are therefore considered dissimilar to all the opponent’s goods.

Contested goods in Class 25

The contested clothing; footwear; headgear are dissimilar to all the opponent’s goods. Even though some of the opponent’s furniture can be used to store clothing, footwear and headgear, this is not sufficient to establish that the goods are similar. They do not have the same nature, purpose or method of use. They do not have the same producers or distribution channels. Furthermore, they are neither in competition nor complementary.

Contested goods in Class 28

The contested games and playthings are similar to the opponent’s toy chests. They are complementary and may have the same producers, distribution channels and relevant public.

The contested gymnastic and sporting articles not included in other classes; decorations for Christmas trees are dissimilar to all the opponent’s goods. The goods belong to different areas of activity, are of different natures and have different initial purposes.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to various degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

1) COLCHON DELTA 2)
Earlier trade marks	Contested sign

The relevant territory is the European Union, including Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘DELTA’ is meaningful in certain territories, for example, in those countries where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Earlier mark 1) is a word mark, ‘COLCHON DELTA’.

Earlier mark 2) is a figurative mark, consisting of the verbal element ‘DELTA’ in slightly stylised black title case letters. Inside the letter ‘D’ is a small black heart shape tilted to the left.

The contested sign consists of the verbal elements ‘DELTA’ in blue upper case slightly inclined letters and ‘SPORT’ in green upper case slightly inclined letters. Between these words is a square with a thin white line dividing it vertically into two halves. The right half is light blue at the top and dark blue at the bottom and the left half is light green at the top and dark green at the bottom.

The coinciding element ‘DELTA’ of the earlier marks and the contested sign will be understood by the relevant public as the fourth letter of the Greek alphabet or ‘a triangular tract of sediment deposited at the mouth of a river, typically where it diverges into several outlets’ (information extracted from Collins Spanish-English Dictionary on 14/06/2017 at https://www.collinsdictionary.com). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘COLCHON’ of earlier mark 1) means ‘mattress’ in Spanish (information extracted from Collins Spanish-English Dictionary on 14/06/2017 at www.collinsdictionary.com). Bearing in mind that the relevant goods are, inter alia, mattresses, this element is non-distinctive for these goods. For the opponent’s pillows, this element has a lower than average degree of distinctiveness, since the word has a connection to the general purpose of the goods, namely making/decorating a bed.

The element ‘SPORT’ of the contested sign is a basic English word and will be associated by the relevant public with sport, that is, ‘activity involving physical exertion and skill in which an individual or team competes against another or others for entertainment’ (information extracted from Oxford Dictionary on 14/06/2017 at https://en.oxforddictionaries.com). Bearing in mind that the relevant goods are, inter alia, games and playthings in Class 28, this element is weak for these goods.

As regards earlier mark 2), it is composed of a distinctive verbal element and a less distinctive figurative element, a heart, used to decorate the letter ‘D’. Therefore, the verbal element is more distinctive than the figurative element.

The figurative element of the contested mark is of limited distinctive character, as it is purely decorative.

Earlier mark 1) has no elements that could be considered clearly more dominant than other elements.

The element ‘DELTA’ in earlier mark 2) is the dominant element as it is the most eye-catching.

The contested sign has no elements that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the verbal element ‘DELTA’, which is distinctive for the relevant goods. However, they differ in the verbal element ‘COLCHON’ (which is non-distinctive or of limited distinctiveness for the goods, as explained above) of earlier mark 1) and in the verbal element ‘SPORT’ (which is weak for some of the goods, as explained above) of the contested mark; neither of these elements has a counterpart in the other sign. The marks also differ in their stylisation, including their additional figurative elements.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DELTA’, present identically in both signs. This coinciding element is distinctive, as explained above. The pronunciation differs in the sound of the element ‘COLCHON’ (which is non-distinctive or of limited distinctiveness for the goods, as explained above) of earlier mark 1) and in the sound of the element ‛SPORT’ (which is weak for some of the goods, as explained above) of the contested mark; neither of these elements has a counterpart in the other sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, owing to the coinciding distinctive word ‘DELTA’, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier mark(s) is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the Spanish-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a verbal element that is non-distinctive or of limited distinctiveness for the goods in earlier mark 1) and of a figurative element of limited distinctiveness (the heart) in earlier mark 2) as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are partly identical, partly similar (to various degrees) and partly dissimilar. They target the public at large. The degree of attention is average.

The signs are visually, aurally and conceptually highly similar, to the extent that they coincide in the distinctive verbal element ‘DELTA’.

Taking into account all the relevant circumstances of the case, the differences between the marks – which result from the word ‘COLCHON’, which is non-distinctive or of limited distinctiveness for the goods, in earlier mark 1), the weak (for some of the goods) element ‘SPORT’ of the contested mark and the figurative elements, including the colours, of the marks – are not sufficient to counterbalance the similarities between them. The relevant public may believe that the relevant goods come from the same undertaking or at least from economically-linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish and European Union trade mark registrations. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, even to a low degree, to those of the earlier trade marks. The high degree of similarity between the signs outweighs the low degree of similarity between the goods.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Plamen IVANOV

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.